Ex Parte Plach et alDownload PDFPatent Trials and Appeals BoardMay 20, 201914007999 - (D) (P.T.A.B. May. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/007,999 09/27/2013 22203 7590 KUSNER & JAFFE Paragon Center II 6150 Parkland Boulevard Suite 105 Mayfield Heights, OH 44124 05/22/2019 FIRST NAMED INVENTOR Thomas Plach UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. BE10776WO(US) 2587 EXAMINER SMITH, BRADLEY ART UNIT PAPER NUMBER 2817 NOTIFICATION DATE DELIVERY MODE 05/22/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mail@kusnerjaffe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte THOMAS PLACH 1, Kurt Hingerl, Markus Wimplinger, and Christoph Flotgen Appeal 2018-004 7 65 Application 14/007 ,999 Technology Center 2817 Before MARK NAGUMO, JEFFREY B. ROBERTSON, and GEORGIANNA W. BRADEN, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Thomas Plach, Kurt Hingerl, Markus Wimplinger, and Christoph Flotgen ("Plach") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 19--21. 3 We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is identified as EV Group E. Thallner GmbH. (Appeal Brief, filed 08 December 2017 ("Br."), 3.) 2 Office Action mailed 28 April 2017 ("Final Rejection," cited as "FR"). 3 Copending claims 1-17 and 42--45 were canceled by an amendment filed under 37 C.F.R. § 1.116 on 22 September 2017, which was entered 29 September 2017, by the Examiner, and are not before us. Appeal 2018-004 7 65 Application 14/007 ,999 A. Introduction4 OPINION The subject matter on appeal relates to methods of irreversibly bonding substrates with a high bond force, preferably at low (i.e., ambient) temperatures, such that active components such as transistors and other CMOS ("complementary metal-oxide-semiconductor") structures are not damaged or adversely affected during processing. (Spec. 1 [0002], [0006].) Prior art methods of bonding such substrates are said to proceed at high temperatures, e.g., >400°C, in order to ensure high bond strengths and reproducible results. (Id. at [0003].) Plach seeks patent protection for a bonding process that is said to occur at low temperatures. An embodiment of the claimed process is illustrated in Figures 1 b, 2a, and 2b, reproduced on the next page. As shown in Figure 1 b, "reservoirs" 5 and S'[5J are formed on opposing contact surfaces 3 and 4, respectively, of substrates 1 (lower, not labeled) and 2. The respective surface layers 6, 6' are preferably a native oxide such as silicon dioxide of the substrate, which in this instance is silicon. 6 (Id. at3 [00010], 16 [00066], 16-17 [00068].) 4 Application 14/007,999, Method for permanently bonding wafers, filed 27 September 2013 as the national stage under 35 U.S.C. § 371 of PCT/EPl 1/55470, filed 08 April 2011. We refer to the "'999 Specification," which we cite as "Spec." 5 Throughout this Opinion, for clarity, labels to elements are presented in bold font, regardless of their presentation in the original document. 6 Other substances, including elements from columns 2, 4--14 and 16 of the periodic table, are listed as materials that can react as an educt with another supplied educt to form a product having a higher molar volume. (Spec. 5- 2 Appeal 2018-004 7 65 Application 14/007 ,999 Reservoirs 5, 5' are formed by, e.g., activation by exposure to a plasma, such as an oxygen plasma. (Id. at 4 [00015], 9 [00028], [00029].) The reservoirs are then filled with a "first educt" by, e.g., flushing them with deionized water, or by "exposing the reservoir to a water vapor- or hydrogen peroxide vapor-containing atmosphere." (Id. at 11 [00037].) According to the Specification, "reservoir 5 ( and optionally the reservoir 5 ') is filled at least largely with H20 as the first educt prior to the step shown in Figure 1 and after plasma treatment. Reduced species of the ions present in the plasma process can also be located in the reservoir, especially 02, N2, H2, Ar." (Id. at 17 [00070].) Then the two wafers are brought into contact, as illustrated in Figure 1 b, below left, forming so-called preliminary, or "pre-bonds" at temperatures ranging from ambient to a maximum of 50°C. (Id. at [00072].) Fig.1b 2 7 \. t ',,.--'-./~ h /"' 1 '1 ~ ) ~ 1 ;·.OG00~000QQP,;;,·;<;//5' 0 ....--..;c'.ll·,ooo!> _::i,:;.o·ooo~v~ /,Jt .. G.=! ' .•• ~.Q .. ~{/·~,?(~.\ 4 , .r\i 1 3 (-··-~\:;~··-·--···--) \,."' ··~ ./ .. I 'l>a·, osl'o;.~.'::/;.:'-»o't'-/ ·~cooo~~~oo~ 5;f ""iooooowolc \ r .. ..._,...T···--··....---.·-~ {l {Figure 1 b shows two wafers in contact after plasma activation and filling reservoirs 5, 5'-note the hydrogen bonded water bridge, -3 to 5 monolayers of water (Spec [00073])} Flg.2a Fig. 2b {Figure 2b shows covalent silanol groups (Spec. [00075])} 6 [00019).) Certain semiconductors and other substances are also listed. (Id. at 6-7 [00020].) 3 Appeal 2018-004 7 65 Application 14/007 ,999 In the words of the Specification, "[a]s guideline values the prebond strengths of pure, nonactivated, hydrophilized silicon with roughly 100 mJ/m2 and of pure, plasma-activated hydrophilized silicon with roughly 200-300 mJ/m2 are mentioned." (Spec. 5 [00018].) The prebonds are said to be "mainly due to the van-der-Waals interactions between the molecules of the different wafer sides." (Id.) The system evolves at room temperature from the hydrogen-bonded bridge of 3 to 5 monolayers of water molecules illustrated in Figure 1 b to hydrogen bonded bridges between siloxane groups (Figure 2a, supra; Spec. 18 [0074]), to covalently bonded silanol groups (Figure 2b, supra; (id. at [0075]). The strength of the permanent bonds is said to range up to a factor of25 times the strength of the preliminary bonds. (Id. at 5 [00018].) Thus, the permanent bonds have a strength of roughly 25 x 200-300 mJ/m2 = 5000-7500 mJ/m2 = 5-7 .5 J/m2. The existence of reservoirs 5, 5' is said to enable diffusion of water into the surface layer of the substrate, leading to the reaction Si-OH + HO-Si ~ Si-0--Si + H20, illustrated in Figure 2b, supra, to occur at room temperature. (Id. at 18 [00076}-[00077].) Continued reaction leads to direct contact of surface 3 to surface 4, as shown in Figures 3 and 4, reproduced on the following page. 4 Appeal 2018-004 7 65 Application 14/007 ,999 {Figure 3 (below left) and Figure 4 (below right)} ,B 6~ {Figure 3 shows direct contact of surface 3 to surface 4 (Spec 18 [00075])} {Figure 4 shows formation of permanent siloxane bonds (Spec 19 [00078])} Reservoirs 5, 5' also are said to enable the low temperature reaction illustrated in Figures 5 (below left) and 6 (below right). (Id. at 18- 19 [00078].) 10 ! ,. .... --.--.., /.---.,,, ,/---~. I /.----,, 6'. ,·' ""--· '... ... ,· °'1-' '-, \! ! ' q 1 I 1 ! -r·-·- 7 ~¥'-'""-"""'" 1 """"".J . 2 ............... ~ \ -.. ............ -.............__................... ..~----.-~-...:--or-.•----~-..... -.,..,..--7· · · t 1---·· 8 > "· "" ' J . ( \ \ ( . . L .. ·----- _)--·, \ ""'~· l. --~--4 ........ ,,.-~ ·,-..·,;_v!.:~ ,-.... ,,,-. •• ,,.,·~. "'~~--•.• .. ·. -----L· "' " .... , .... Ir(" A, ~t: '<.<"l~-~'J"I ~~ ;:;;:,t· Sc"-• ... r:-'('H) . ·1 ;I ~ f"'""I t ...... V \..,_.r ~t. ... J \.) \..,o .-' :) ( · V .,._ o o o o o o o, o o o o o o o, R 1. 0000000000_000000 ! · ··--;11,, 0 Q O O O O O O O 0 0 0 O O (J\ .• , Q r, n ·O· r ,., '" '") rs (' ') ,..._ n .-, \\ 5., ... -~. L, •. I,., ·'-"· < d ,>-.·'·· .._~ ., •• .',.<. ., -~ .,,.,_ J -"-'·" 11 " .. ' + ! - w I . . , 6 {Figures 5 and 6 show chemical and physical processes that occur on the interfaces between contact surfaces 3 and 4} 5 Appeal 2018-004 7 65 Application 14/007 ,999 The reaction, Si+ 2H20----+ Si02 + 2H2, at the interface of surface layer 6' and reaction layer 7 is said to result in the formation of reaction product 10, which, in the words of the Specification, "deforms the layer of the growth layer 8 formed as native oxide in the direction of the gaps 9" (id.) due to the greater volume of Si02 compared to Si (id. at 19 [00080]). In this way, stresses on contact surfaces 3, 4 are said to be reduced and all pores closed, thereby resulting in strong, permanent bonding over the entire wafer. (Id. at 20 [00080].) Sole independent claim 19 is representative and reads: A method of bonding a first contact surface [3] of a first substrate [1] to a second contact surface [ 4] of a second substrate [2] comprising the following steps: forming a first reservoir [ 5] in a surface layer [ 6] on the first contact surface [3] and a second reservoir [5'] in a surface layer [6'] on the second contact surface [ 4], the surface layers [ 6, 6 '] of the first and second contact surfaces being comprised of native oxide materials of silicon respectively contained in reaction layers of the first and second substrates; partially filling the first and second reservoirs [5, 5'] with one or more first educts [H20]; forming a prebond connection between the first and second contact surfaces [3, 4] by bringing one or more portions of the first contact surface [3] into contact with one or more portions of the second contact surface [ 4] such that gaps [9] are formed between the first and second contact surfaces [3, 4] at areas located between the respective contacted portions of the first and second contact surfaces; and 6 Appeal 2018-004 7 65 Application 14/007 ,999 reacting the first educts [H20] filled in the first reservoir [5] with the silicon contained in the reaction layer [7] of the second substrate [2] to form a reaction product [10] to at least partially strengthen a permanent bond formed between the first and second contact swfaces, the reaction product [10] being formed between the reaction layer [7] of the second substrate [2] and the surface layer [6'] of the second substrate, the reaction serving to bulge the surface layer [ 6 '] of the second substrate [2] toward the first contact surface [3] to close the gaps [9] and at least partially strengthen the permanent bond, the reaction serving to deform a portion of the reaction layer [7, 8] of the second substrate [2] into the reaction product [10]. (Claims App., Br. 25; some formatting, emphasis, and bracketed labels to elements illustrated in the Figures added.) The Examiner maintains the following grounds of rejection: 7, s, 9 A. Claims 19--21 stand rejected under 35 U.S.C. § 112(1) for lack of an enabling disclosure B. Claims 19-21 stand rejected under 35 U.S.C. § I02(b) in view of Kerdiles. 10 7 Examiner's Answer mailed 09 February 2018 ("Ans."). 8 Because this application was filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 9 Claims 1-17 and 42--45 were canceled by an amendment filed under 3 7 C.F .R. § 1.116 on 22 September 2017, which was entered by the Examiner on 29 September 2017. 10 Sebastien Kerdiles, Method of bonding two wafers of semiconductor materials, U.S. Patent Application Publication 2006/0240642 Al (2006). 7 Appeal 2018-004 7 65 Application 14/007 ,999 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Rejection A: lack of enablement The Examiner rejects claims 19--21 as lacking an enabling disclosure because now-canceled claim 43 read, "[t]he method as claimed in Claim 19, wherein the permanent bond has a bond strength of greater than 1.5 J/m2." The Examiner maintains this, and corresponding disclosure in the Specification, causes claim 19 to read on a "permanent bonding strength greatly exceeding 7.5 J/m2 (i.e. 100 J/m2)." (Ans. 2, 11. 17-18.) While the Examiner accepts that species having permanent bond strengths between 1.5 J/m2 and 7.5 J/m2 are enabled by the '999 Specification, the Examiner maintains that species having permanent bond strengths greater than 7.5 J/m2 are not. (Ans. 3, 11. 3-13; id. at 4, 11. 13-15.) Moreover, although the Examiner acknowledges that the Specification states, "[t]he object of this invention is therefore to devise a method for careful production of a permanent bond with a bond force which is as high as possible" (Spec. 2 [0008], quoted at Ans. 3, 11. 5---6), the Examiner finds that the Specification "does not define hard boundaries for the upper limit bond strength of the claimed permanent bond" (Ans. 3, 11. 21-22). The Examiner concludes that the claims, given the broadest reasonable interpretation, read on high permanent bonding strengths much greater than 7.5 J/m2, and, therefore, are rejected for lack of enablement for their full scope. (Id. at 4, 1. 14--5, 1. 6.) 8 Appeal 2018-004 7 65 Application 14/007 ,999 It is well-settled that "the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ( emphasis added). It is true, as the Examiner points out, that the plain language of claim 19 requires that the reaction product upon contact of the two wafer surfaces "at least partially strengthen a permanent bond formed between the first and second contact surfaces." It is also true that claim 19 recites no express upper bound to that strength. The Examiner has not explained, however, how or why a person having ordinary skill in the relevant arts would have read the Specification as proposing that the "permanent bond with a bond force which is as high as possible" (Spec. 2 [0008], summarized supra at 6) would be substantially higher than the 5-7.5 J/m2 taught expressly (id. at 5 [00018] 11 ), such as 100 J/m2, recited in the Answer (Ans. 2, 1. 18). Nominally "open-ended" ranges are common in claims. But, particularly in technological arts, inspection of the disclosure, from the point of view of a person having ordinary skill in the art, often reveals, as here, that some upper ( or lower) limit, though perhaps not precisely defined, is 11 Plach (Br. 14, 11. 5-8) refers to this passage as "paragraph [0022]," apparently referring to the U.S. Patent Application Publication 14/007999 corresponding to the substitute Specification filed 27 September 2013. We refer solely to the substitute Specification in the record. Plach teaches that the permanent bond strengths are preferably stronger by a factor of 25 than the pre-bond strength: 200-300 mJ/m2 x 25 = 5000-7500 mJ/m2 = 5-7 J/m2. 9 Appeal 2018-004 7 65 Application 14/007 ,999 intended. In the present case, the Examiner has not shown, by the preponderance of the evidence of record, that permanent bond strengths "as high as possible" would have been interpreted by the routineer as covering bond strengths substantially greater than 7.5 J/m2. We, therefore, reverse the rejection for lack of enablement. Rejection B: Anticipation by Kerdiles To be anticipatory, a reference must describe, in an enabling manner, either expressly or inherently, each and every claim limitation, arranged or combined as required by the claimed invention. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Our reviewing court has long held that "[ w ]here ... the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977)(citation omitted). "This burden," the court explained, "is applicable to product and process claims reasonably considered as possessing the allegedly inherent characteristics." Id. Moreover, the court continued, "[ w ]hether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103,jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." Id. (citation and footnote omitted). The Examiner finds that Kerdiles discloses a process in which the silicon oxide surfaces of two wafers are treated to form reservoirs in the 10 Appeal 2018-004 7 65 Application 14/007 ,999 surface layers which are subsequently contacted, and partially filling the reservoirs with educts. (FR 6, 11. 17-22, citing, inter alia, Kerdiles [0114]- [0117].) The Examiner finds further that Kerdiles describes forming a prebond connection between the first and second contact surfaces, (FR 6, 1. 22-7, 1. 2), and the subsequent reaction of the educts to at least partially strengthen a permanent bond between the first and second contact surfaces (id. at 7, 11. 2-11.) The Examiner finds that Kerdiles does not disclose explicitly certain features, such as the bulge of the surface layer, and the filling of gaps between the contact surfaces that are filled, etc. (Id. at 11. 12- 13, 15-16.) The Examiner reasons, however, that "Kerdiles disclose[s] the same method with the same structure therefore one would expect the same results." (Id. at 11. 20-21.) 12 Plach appears to agree with the Examiner that Kerdiles describes the main steps of the claimed process. (Br. 19, listing five steps of treating the surfaces, including preparation for bonding, plasma activation, optional clearing, contacting, and reinforcing bonding by a heat treatment.) Plach urges, however, that Kerdiles does not teach or suggest first educts that are purposely filled in the claimed first reservoir and subsequently reacted with the silicon contained in the reaction layer of the claimed second substrate to form a 12 The Examiner, in the Final Rejection, makes numerous specific findings regarding limitations recited in the now-canceled dependent claims, including those depending from now-canceled independent claim 1. These additional findings, of which Plach has been given full notice, elaborate and support the findings regarding the independent claims. 11 Appeal 2018-004 7 65 Application 14/007 ,999 reaction product to at least partially strengthen a permanent bond formed between the first and second contact surfaces. (Id. at 11. 20-23.) "Indeed," Plach continues, "since Kerdiles does not teach the claimed formation of the reaction product, Kerdiles cannot teach the deformation of a portion of the second wafer / substrate into the reaction product." (Id. at 20, 11. 15-17.) Plach concludes that "the disclosure of Kerdiles goes no further than requiring the putting of the bonding surfaces into contact with each other, the initiating of the bonding, and the reinforcing of the bonding by heat treatment." (Id. at 21, 11. 4---6.) The absence of "further discussion in Kerdiles as to the method by which the bond between the bonding surfaces is formed" (id. 11. 4--7), in Plach's view, demonstrates that the rejection for anticipation should be reversed. There is no dispute that Kerdiles is directed to similar subject matter-bonding of silicon wafers for semiconductor materials to one another-as Plach's subject Specification and claims. As well-stated and explained by the Examiner ( Ans. 7-11 ), the failure of Kerdiles to disclose the chemical and physical mechanisms recited in the claims does not relieve Plach of the burden of showing, more likely than not, that the materials, process steps, and conditions disclosed by Kerdiles are sufficiently different from those required by the appealed claims that Kerdiles should be considered to describe a substantially different process that is not covered by claim 19. Plach does not direct our attention to any disclosure in the '999 Specification-nor is any immediately apparent-indicating that anything beyond exposure of the silicon substrates to a plasma, followed by exposer to water, followed by physical contact of the two substrates at room 12 Appeal 2018-004 7 65 Application 14/007 ,999 temperature, is required to induce the various reactions and transformations recited in claim 1. We, therefore, affirm Rejection B of claims 19--21 as anticipated under 35 U.S.C. § 102(b) in view ofKerdiles. C. Order It is ORDERED that the rejection of claims 19-21 for lack of an enabling disclosure under 35 U.S.C. § 112(1) is reversed. It is FURTHER ORDERED that the rejection of claims 19--21 as anticipated under 35 U.S.C. § 102(b) by Kerdiles is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 13 Copy with citationCopy as parenthetical citation